Xerox Corporation v. Google Inc. et al

Filing
168

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
XEROX CORPORATION,
Plaintiff-Counterclaim Defendant,
v.
GOOGLE INC., YAHOO! INC., RIGHT MEDIA
INC., RIGHT MEDIA LLC, YOUTUBE, INC. AND
YOUTUBE, LLC,
Defendants-Counterclaim Plaintiffs.
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REDACTED
PUBLIC VERSION
C.A. No. 10-136-LPS
PLAINTIFF XEROX CORPORATION’S
RESPONSE TO DEFENDANTS’ CLAIM CONSTRUCTION TUTORIAL
ASHBY & GEDDES
Lawrence C. Ashby (I.D. #468)
John G. Day (I.D. #2403)
Lauren E. Maguire (I.D. #4261)
500 Delaware Avenue, 8th Floor
P.O. Box 1150
Wilmington, DE 19899
(302) 654-1888
Attorneys for Plaintiff Xerox Corporation
Of Counsel:
Richard J. Stark
Andrei Harasymiak
CRAVATH, SWAINE & MOORE LLP
Worldwide Plaza
825 Eighth Avenue
New York, NY 10019-7475
(212) 474-1000
Dated: April 26, 2011
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A.
Defendants Improperly Use Their Tutorial as a Forum For Advocating
Their Claim Construction Positions.
Despite the Court’s admonition in its February 15 Amended Scheduling Order
that “[t]he tutorial[s] should focus on the technology in issue and should not be used to
argue claim construction contentions” (D.I. 115 ¶ 8, emphasis added), Defendants use their
tutorial to argue for specific constructions of disputed claims. In their opening brief, for
example, Defendants argue that a query formulated in accordance with the claims must be
confined to performing a search only in a single category or “folder” of information.
Defendants attempt to support their position by citing both Figure 39 of the ’979 Patent and the
patent’s prosecution history. (See Defs.’ Opening Br., D.I. 141, at 4-5, 8-9.) But as discussed in
Xerox’s responsive brief, the specification’s explanation of Figure 39 vitiates Defendants’
attempt to equate the asserted claims with the single sample query shown in that figure; the
specification expressly teaches that the formulated query need only be “focused” on (not
confined to) a category. (See 4/26/11 Xerox Resp. Br., at 10.) In addition, black-letter patent
law, the language of the claims and the specification all contradict Defendants’ argument that
only a single classification label may be used in query formulation. (Id. at 3-5.) Finally, Xerox
never distinguished the ’979 Patent from the Rennison patent (or any other prior art) on the basis
of Defendants’ incorrect construction of “restrict”. (Id. at 11-12.) Nor, as Defendants imply in
their tutorial, did the examiner allow the patent on the basis of Defendants’ construction. (See
Ex. A, at 28/11:15-12:08.)1 Instead, the examiner allowed the patent because Claim 1 was novel
as a whole. (See Ex. B.)
Nevertheless, Defendants’ tutorial consistently attempts to repackage these claim
construction fallacies into seemingly neutral statements of fact. Thus, the tutorial repeatedly and
1
Citations to Defendants’ tutorial refer to Defendants’ hard copy slides (attached as Ex. A)
and their accompanying video, as follows: “[hard copy page number]/[time in video]”.
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incorrectly implies that the technology of the ’979 Patent is confined entirely to the sample query
shown in Figure 39. (See, e.g., Ex. A at 13/5:59-6:44; 16/8:01-8:22; 22/9:10-9:45.) The
narration also repeatedly asserts that a classification label is “used to formulate a query to restrict
a search to one assigned category”. (Id. at 8/3:47-4:11; see also id. at 16/8:01-8:22; 22/9:10-9:23;
33-35/13:21-13:45.) Finally, Defendants wrongly imply that Xerox distinguished the Rennison
prior art patent during prosecution on the basis of Defendants’ proposed claim construction (id.
at 28/11:15-12:08) and further wrongly imply that the examiner allowed the patent on this basis
(id.). These assertions are all incorrect for the reasons above, as further explained in Xerox’s
responsive claim construction brief. (See Xerox Resp. Br. at 3-5, 10-12.)
Defendants also promote other incorrect claim constructions—e.g., that a query is
a “request for search results” and the steps of Claim 1 must be performed before the step of
Claim 2 (D.I. 141, at 14, 18)—by discussing parts of the ’979 Patent specification that have
tangential relevance to the asserted claims. Thus, the tutorial devotes considerable time to a
“Document Processing Flowchart” in which the system first generates and performs a query
using entities and classification labels. Then, if the results obtained by using that query are “not
sufficiently accurate”, the system creates an “aspect vector” using terms surrounding the entities
identified in the document. (Ex. A at 36-37/13:45-14:30.) At that point, according to
Defendants, “[t]he process then attempts the search again, using the more precise query”. (Id. at
37/14:25-14:30, emphasis added.) Defendants also refer to “search results” repeatedly
throughout their discussion of this flowchart. (See, e.g., id. at 33-36/13:20-14:01.) The apparent
purpose of this exercise is to imply that the claimed query must be a request for search results or
that the query of Claims 1 and 18 must be formulated before the terms of Claim 2 are added.
But the asserted claims concern query formulation only. None of the asserted
claims requires performing a search of any kind, nor a request for search results, nor the return of
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search results to users. (See Xerox Resp. Br. at 5-8.) Defendants ignore the actual teachings
concerning query formulation earlier in the specification, which clearly indicate that a query is
defined by its content. By focusing solely on portions of the specification that go beyond the
subject matter of the asserted claims, Defendants distort the scope of those claims. Similarly,
Claim 2 of the ’979 Patent says nothing about a query being formulated and executed only after a
search performed in accordance with Claim 1. Claim 2 merely requires that the formulated
query contain data corresponding to entities, terms and classification labels, all based on the
same document content. As discussed in Xerox’s briefs, there is no reason that Claim 1 must be
performed before Claim 2, and the specification expressly discloses an embodiment in which the
step of Claim 2 begins before the steps of Claim 1 are complete—an embodiment Defendants
ignore in their tutorial. (See Xerox Opening Br., D.I. 142, at 18-19; Xerox Resp. Br. at 20.)
B.
Defendants Make Incorrect Assertions in Discussing the ’979 Patent
In addition to making incorrect claim construction arguments, Defendants’
tutorial makes various assertions that are inconsistent with undisputed aspects of the asserted
claims and their supporting specification sections. For example, the tutorial incorrectly asserts
that an entity “represents a concept about which a user may desire additional information”. (Ex.
A at 9/4:10-4:25; 14/6:54-7:01.) But the ’979 Patent explicitly defines “entities” as “something
recognized in a document (e.g., a person’s name, a location, a medical term, a graphics entity
that may include image data, graphics data, audio data or video data) that can be in the form of
an image, text, embedded data, HTML, etc.” (’979 at 6:65-7:2), and the parties adopted this
definition as the agreed construction for “entity”. This definition says nothing about entities
being “concepts” based on user desire for information. In that regard, the tutorial also
incorrectly suggests that entity selection involves a user. (See Ex. A at 23/10:09-10:15.) In the
asserted claims and corresponding specification sections, however, entity identification and
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query formulation are performed “automatically”, i.e., without any user involvement, and
Defendants have never argued that any user involvement is required by the claims.
C.
Defendants Mischaracterize the Relationship of the Asserted Claims of
the ’979 Patent with the Prior Art.
Apparently attempting to frame validity arguments, Defendants use their
tutorial to mischaracterize the relationship of the ’979 Patent’s claimed technology with the
prior art. Thus, Defendants begin their tutorial with a discussion of “agent-based systems”
mentioned early in the specification and then segue into a discussion of systems that
performed agent-based functions prior to the ’979 Patent. Defendants’ attempts to frame the
asserted claims of the ’979 Patent in terms of these prior agent-based systems are misleading
and inaccurate. The ’979 Patent’s specification—which it shares with 8 other issued U.S.
patents, most not claiming query formulation—describes a comprehensive document
management system.2 Only one portion of that system concerns formulating queries based on
document content.3 (See ’979 Patent Section F.3, which also refers to Sections B.4 and F.1.)
Generating queries in a novel and unique manner that combines information (“entities”)
recognized in document content with categorization of the same document content is the only
subject of the claims at issue in this case. In that regard, the ’979 Patent expressly teaches that
its query formulation technique is intended “to improve the quality (e.g., in terms of precision
recall) of information retrieval systems”—not, as Defendants would have it in their tutorial, “the
asserted problem of document enrichment and management”. (See Ex. A at 4/1:46-1:52.) None
2
Indeed, the discussion of “agent-based systems” that Defendants cite in their tutorial is
identical in all of those patents.
3
As the Federal Circuit has noted, “each claim does not necessarily cover every feature
disclosed in the specification. When the claim addresses only some of the features disclosed in
the specification, it is improper to limit the claim to other, unclaimed features.” Broadcom Corp.
v. Qualcomm Inc., 543 F.3d 683, 689 (Fed. Cir. 2008) (quoting Ventana Med. Sys., Inc. v.
Biogenex Labs., Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)).
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ASHBY & GEDDES,
/s/ John G. Day
Lawrence C. Ashby (I.D. #468)
John G. Day (I.D. #2403)
Lauren E. Maguire (I.D. #4261)
500 Delaware Avenue, 8th Floor
P.O. Box 1150
Wilmington, DE 19899
(302) 654-1888
lashby@ashby-geddes.com
jday@ashby-geddes.com
lmaguire@ashby-geddes.com
Attorneys for Plaintiff Xerox Corporation
Of Counsel:
Richard J. Stark
Andrei Harasymiak
CRAVATH, SWAINE & MOORE LLP
Worldwide Plaza
825 Eighth Avenue
New York, NY 10019
(212) 474-1000
Dated: April 26, 2011
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